Appeal No. 2003-0094 Page 4
Application No. 08/995,786
the combined teachings of Singleton and Wolfe. In arriving at this conclusion, the
examiner acknowledges that Singleton fails to disclose or teach the claimed fuel cell,
but takes the position that it would have been obvious to add a fuel cell to the
environmental control system of Singleton in view of the teachings of Wolfe. The
appellants argue that no suggestion exists to combine the references in the manner
proposed by the examiner.
The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See, for example, In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention. See Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the prior art as a whole or
from the knowledge generally available to one of ordinary skill in the art and not from
the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Singleton discloses a system for generating cool air to cool a space 1. The
system comprises a shaft 19 upon which are mounted a first drive turbine 3 that is
caused to rotate by the hot gases issuing from a combustion chamber 5, a second drive
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